Securian Financial Group, Inc. v. me s / enom
Claim Number: FA1412001595614
Complainant is Securian Financial Group, Inc. (“Complainant”), represented by William Schultz of Merchant & Gould, P.C., Minnesota, USA. Respondent is me s / enom (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <minnesota.life>, registered with Enom.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Dr. Reinhard Schanda as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 16, 2014; the National Arbitration Forum received payment on December 16, 2014.
On December 16, 2014, Enom confirmed by e-mail to the National Arbitration Forum that the <minnesota.life> domain name is registered with Enom and that Respondent is the current registrant of the name. Enom has verified that Respondent is bound by the Enom registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 17, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 6, 2015 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@minnesota.life. Also on December 17, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on January 5, 2015.
An Additional Submission was received from Complainant on January 9, 2015, and found compliant.
An Additional Submission was received from Respondent on January 12, 2015, and was also deemed compliant.
On January 13, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Dr. Reinhard Schanda as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant owns the MINNESOTA LIFE mark through registration with the United States Patent and Trademark Office ("USPTO") (Reg. No. 2,462,139, registered June 19, 2001). Complainant uses MINNESOTA LIFE to identify its life and health insurance and annuities offerings. Complainant conducts its online business through <minnesotalife.com>. The <minnesota.life> domain name is confusingly similar to the MINNESOTA LIFE mark as the domain name merely interjects a period in place of the space to form the domain name.
Respondent does not have any rights or a legitimate interest in the disputed domain name. Complainant has not authorized Respondent’s use of the MINNESOTA LIFE mark, nor is Respondent commonly known by the disputed domain name. To further demonstrate Respondent’s lack of rights in the name, Respondent has not used the disputed domain name for a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. The disputed domain name had resolved to a website featuring pay-per-click links to websites associated with competitors of Complainant. Respondent’s post-notice employment of a disclaimer on the resolving page does not alleviate Respondent’s burden, and is insufficient to demonstrate rights in the subject domain name. In addition, Respondent’s offer to sell the disputed domain name only adds weight to the conclusion that Respondent has no rights or legitimate interests in the disputed domain name.
Respondent registered and is using the disputed domain name in bad faith. Respondent’s offer to sell the disputed domain name for profit reveals bad faith pursuant to Policy ¶ 4(b)(i). Respondent has also violated Policy ¶ 4(b)(iii) as Respondent disrupts Complainant’s business by directing users to competitors of Complainant through the confusingly similar domain name. As Respondent is generating click-through or referral revenue from the promoted links, Respondent’s diversionary conduct falls within that proscribed by Policy ¶ 4(b)(iv). Further, Respondent registered the domain name in bad faith as it had actual and/or constructive knowledge of Complainant at the time of registration. The presence of a disclaimer on the resolving page does not mitigate Respondent’s established bad faith.
B. Respondent
The “.life” extension should be considered separate from the secondary level of the domain name. Users would not see <minnesota.life> and think of Complainant’s mark, but instead “life in Minnesota” would come to mind. The phrase “Minnesota Life” is a generic reference to life in the State of Minnesota.
Respondent is in the business of collecting generic domain names. Respondent develops some names, and sells others. Respondent holds names based on their intrinsic value. Respondent has never lost any UDRP case, and avoids registering fanciful trademarks as domain names.
Respondent’s willingness to trade generic domain names does not demonstrate that it lacks a legitimate interest in the domain name. Further, Respondent has never tried to sell the domain name to Complainant or any of its competitors.
The content resolving from the disputed domain name does not relate to Complainant. Respondent was not aware of Complainant at the time of registration, and therefore did not register the mark to infringe on Complainant’s mark, but rather for the intrinsic value of the generic domain name.
This is a case of reverse domain name hijacking.
C. Additional Submissions
Complainant:
The overall impression of the disputed domain name corresponds with Complainant’s mark.
Respondent’s efforts to distance itself from the resolving content is baseless. The registrants are responsible for the content on any website associated with the domain name.
Respondent admits that the disputed domain name has resolved to pay-per-click website as well as that the domain name was listed on Sedo. Respondent’s use of the disputed domain name in this manner shows a lack of legitimate rights and bad faith. Further, Respondent’s modification to the website after receipt of the cease and desist letter fails to demonstrate rights in the mark or mitigate bad faith.
Respondent’s allegation of reverse domain name hijacking is unfounded. Complainant has not misrepresented facts to the Panel, and has registered the MINNESOTA LIFE mark.
Respondent:
Confusing similarity is generally considered with the keyword portion of the domain name, namely “Minnesota” in this case. Minnesota is generic and does not, in itself, trigger the requisite association with Complainant to find confusing similarity.
As a generic domain name reseller and developer, Respondent has bought more than 200 domains in the last six months. It is impractical to develop or redirect all these new domain names immediately after registration.
Complainant’s mark is about insurance, not investing. Neither redirecting to <investing.in> nor creating a site under the domain with some information is indicative of bad faith.
The fact that the domain name was listed for sale does not demonstrate a lack or rights or bad faith by itself. Selling domain names is one aspect of Respondent’s business. Respondent both sells and develops generic domain names.
The Panel finds that:
1. The domain name <minnesota.life> is confusingly similar to Complainant’s registered trademark.
2. The Respondent has not established rights or legitimate interests in the domain name <minnesota.life>.
3. The Respondent has registered and is using the domain name <minnesota.life> in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant uses MINNESOTA LIFE to identify its life and health insurance and annuities offerings. Complainant claims to own the MINNESOTA LIFE mark through registration with the USPTO (Reg. No. 2,462,139, registered June 19, 2001). Complainant adds that it conducts its online business through the <minnesotalife.com> domain name. The Panel determines that Complainant’s registration of MINNESOTA LIFE with the USPTO sufficiently demonstrates Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Complainant argues that the <minnesota.life> domain name is confusingly similar to the MINNESOTA LIFE mark. Complainant contends that the domain name incorporates the mark in full and merely interjects a period in place of the space to form the domain name. Past panels have determined that alterations in punctuation and spacing serve no distinguishing value. See Mrs. World Pageants, Inc. v. Crown Promotions, FA 94321 (Nat. Arb. Forum Apr. 24, 2000) (finding that punctuation is not significant in determining the similarity of a domain name and mark); U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”). Approaching this domain name from another angle, panels have frequently considered that the affixation of a top-level domain is irrelevant to the confusing similarity determination. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). Still, with the recent develop of new top-level domain names, panels have begun considering that the added TLD may serve to increase confusing similarity. For example, in DD IP Holder LLC v Manpreet Badhwar, FA 1562029 (Nat. Arb. Forum July 14, 2014), the panel wrote, “because there is a reference to food and restaurants inherent in the new gTLD ‘.menu’, the combination of the ‘dunkin’ element with the ‘.menu’ gTLD extension adds further to the confusing character of the domain in issue in the present case.” While the instant case is distinguishable in that the added TLD does not relate per se to the mark but is a dominant portion of the mark, the Panel still finds guidance from recognition that a TLD can find relevancy in Policy ¶ 4(a)(i). In sum, as the <minnesota.life> domain name is comprised of the MINNESOTA LIFE mark with the insertion of a period in place of the space between the two-word mark such that the domain name retains identify to the mark, the Panel determines that the domain name is confusingly similar to the mark pursuant to Policy ¶ 4(a)(i).
While Respondent contends that the <minnesota.life> domain name is comprised of common and generic terms and as such cannot be found to be confusingly similar to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i), and in fact a separate consideration, as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy:
(a) He has made preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services prior to the dispute;
(b) He is commonly known by the domain name, even if he has not acquired any trademark rights; or
(c) He intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
The Panel determines that the Complainant has discharged the onus of proof for the second criterion: The Respondent has failed to demonstrate any legitimate right or interest.
According to the majority of Panel decisions this Panel also takes the position that while Complainant has the burden of proof on this issue, once the Complainant has made a prima facie showing, the burden of production shifts to the Respondent to show by providing concrete evidence that it has rights to or legitimate interests in the domain name at issue. See Document Technologies, Inc. v. International Electronic Communications, Inc., D2000-0270 (WIPO June 6, 2000); Inter-Continental Hotel Corporation v. Khaled Ali Soussi, D2000-0252 WIPO July 5, 2000); Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the Complainant has asserted that the Respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the Respondent”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent.”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
In pursuit of its prima facie case, Complainant alleges that it has neither authorized Respondent’s use of the MINNESOTA LIFE mark, nor is Respondent commonly known by the disputed domain name. The Panel notes that the WHOIS record lists “me s / enom” as registrant. The Panel further notes that Respondent’s rebuttal does not rely on it being commonly known by the disputed domain name. As such, the Panel determines there is no basis to find Respondent commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response).
To further demonstrate Respondent’s lack of rights in the name, Complainant argues that Respondent has not used the disputed domain name for a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. The disputed domain name has resolved to Respondent’s <investing.in> website, which features pay-per-click links to third-party websites associated with competitors of Complainant. Complainant stresses that it offers investing services under the subject mark. Complainant also argues in its Additional Submission that Respondent’s efforts to distance itself from such resolving content is insufficient. Complainant explains that the registrants are responsible for the content on any website associated with the domain name. Prior panels have determined that the use of confusingly similar domain name to promote pay-per-click links does not amount to a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii), especially when the links are in competition with the complainant’s own offerings. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees); Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)). Accordingly, the Panel finds Respondent’s use of the disputed domain name falls outside the parameters of Policy ¶¶ 4(c)(i) and (iii).
Further, Complainant argues that Respondent’s post-notice employment of a disclaimer on the resolving page does not alleviate Respondent’s burden, and is similarly insufficient to demonstrate rights in the subject domain name. Complainant explains that after notice of its infringing activity, Respondent modified the website to display photographs of notable Minnesota attractions, as well as a disclaimer. The Panel agrees that such alterations, including the addition of a disclaimer, are insufficient to rebut Complainant’s Policy ¶ 4(a)(ii) showing. See DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that addition of a disclaimer, when the domain name consists of the complainant’s well-known trademark, does not counter the expectation of Internet users that the domain name is sponsored by the complainant).
In addition, Complainant argues that Respondent’s offer to sell the disputed domain name only adds weight to the conclusion that Respondent has no rights or legitimate interests in the disputed domain name. To support Respondent’s willingness to sell the domain name, Complainant submits screenshots from Domaintools.com as well as Sedo.com. Prior panels have determined that a respondent’s willingness to sell a disputed domain name may demonstrate a lack of rights in the name. See Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name). With respect to the Policy ¶ 4(a)(ii) determination, the Panel considers that Respondent’s general offer to sell the disputed domain name provides insight as to Respondent’s nefarious intentions for the disputed domain name.
Complainant argues that Respondent’s offer to sell the disputed domain name for profit reveals bad faith pursuant to Policy ¶ 4(b)(i). Prior panels have determined that a respondent’s willingness to sell a disputed domain name may demonstrates bad faith. To illustrate, the panel in CBS Broad. Inc. v. Worldwide Webs, Inc., D2000-0834 (WIPO Sept. 4, 2000) wrote, “There is nothing inherently wrongful in the offer or sale of domain names, without more, such as to justify a finding of bad faith under the Policy. However, the fact that domain name registrants may legitimately and in good faith sell domain names does not imply a right in such registrants to sell domain names that are identical or confusingly similar to trademarks or service marks of others without their consent.” See also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”). Since the Panel agrees that Respondent’s general offer to sell the disputed domain name as promoted on the Sedo and DomainTools pages suggests Respondent’s bad faith, the Panel finds evidence of bad faith pursuant to Policy ¶ 4(b)(i).
Complainant argues that Respondent has also violated Policy ¶ 4(b)(iii) as Respondent disrupts Complainant’s business by directing users to competitors of Complainant through the confusingly similar domain name. The Panel recalls that Respondent initially resolved the disputed domain name to its own website at <investing.in>. The Panel notes that the landing page includes links such as “Find Gold,” and “Find Selling Gold” as well as related content regarding “Investing in Gold.” The Panel concludes that Respondent’s use of the disputed domain name to feature investment–related links in competition with Complainant’s offerings demonstrates Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).
Similarly, Complainant argues that because Respondent is generating click-through or referral revenue from the promoted links, Respondent’s diversionary conduct falls within that proscribed by Policy ¶ 4(b)(iv). Panels have found evidence of bad faith under Policy ¶ 4(b)(iv) where the respondent is using a confusingly similar domain name to mislead users as to the complainant’s affiliation with the disputed domain name, and likely generate profit from the resulting confusion. Since the Panel agrees that the use of the domain name is creating an opportunity for Respondent to profit from a likelihood of confusion, the Panel finds accordingly pursuant to Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Reverse Domain Name Hijacking
The Panel finds that Complainant has satisfied all of the elements of Policy ¶ 4(a). Therefore the Panel finds that Complainant has not engaged in reverse domain name hijacking. See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (“Because Complainant has satisfied [all of] the elements of the Policy, Respondent’s allegation of reverse domain name hijacking must fail”); see also Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Nat. Arb. Forum Dec. 2, 2003) (finding no reverse domain name hijacking where complainant prevailed on the “identical/confusingly similar” prong of the Policy).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <minnesota.life> domain name be TRANSFERRED from Respondent to Complainant.
Dr. Reinhard Schanda, Panelist
Dated: January 16, 2015
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